Mental steps doctrine
Overview The mental steps doctrine, which had a rather inauspicious beginning under that label in Halliburton Oil Well Cement Co. v. Walker,''146 F.2d 817, 64 U.S.P.Q. (BNA) 278 (9th Cir. 1944)(full-text). experienced a series of novel elaborations in the hands of the Patent Office as the foundation of its attack on program-related process claims. A quotation from ''Prater I provides an appropriate introduction to the continuing attempts by the Patent Office to bootstrap a variety of patentability disqualifications onto the "mental steps" bar: The thrust of the earlier, non-program cases was that a process which specifically claimed steps disclosed as performed mentally and particularly if requiring interpretive procedures was nonstatutory subject matter. On the other hand, these early cases established that "a method is not per se unpatentable because its practice requires that the operator thereof must think"Ex parte Bond, 135 U.S.P.Q. (BNA) 160, 162 (Pat. Off. Bd. App. 1961).— an observation perhaps too obvious to mention. Program-related processes do not, in fact, require human thought, interpretive or otherwise, in performing those steps associated with the computer. The real focus of the "mental steps" doctrine in this area has been upon process claims which were readable in some fashion on mental implementation (or its equivalent pencil and paper practice). Early hopes that the "mental steps" objection could be avoided by the disclosure of fully automatic machines were not fulfilled, as the Government's Prater argument revealed.In re Prater (Prater II), 415 F.2d at 1399-1400, 162 U.S.P.Q. at 546-47. Of course, claims that definitely read on nonstatutory subject matter would necessarily fail. Therefore, attempts to rescue programs from rejection on this ground followed two basic approaches: (1) denying that the mental processes in question are or ought to be relevant to the subject matter issue and (2) asserting that claims to a program-related process do not read on mental activity at all. The line of reasoning on the irrelevance of mental processes is as follows: (a) infringement is a tort; (b) torts require "acts" and harm to the patentee; © mental practice, which is neither an "act" nor harmful, cannot infringe; and (d) mental practice should therefore not be an issue, since "monopolization" by patent necessarily entails the power to bring infringement actions."' In a similar vein, it has been argued that claims reading on mental practice in the abstract should nevertheless stand if no person would, in fact, practice the invention mentally."' The Prater invention provides an obvious example of such a claim, since the claimed process involved selecting one subset of ten equations from among 184,756 possible subsets.415 F.2d at 1395 n.13, 162 U.S.P.Q. at 543 n.13. A more adventuresome task was to argue that the claimed thought is not, or ought not to be considered, nonstatutory subject matter. The U.S. Supreme Court held as early as 1863 that "ideas" were not patentable.Burr v. Duryea, 68 U.S. (1 Wall.) 531, 570 (1863)(full-text). More recently, it was asserted that, by virtue of their alleged relationship to thought, program-related process patents raised constitutional questions under the first, ninth, and tenth amendments. The response of the pro-patent community was a series of efforts to distinguish patentable mental activity from that which is nonpatentable. One variant was to suggest coverage for all processes, mental or otherwise, as long as they are commercial or industrial in nature. The following rumination illustrates this line of reasoning: The second principal response to the "mental steps" objection was to deny that the claim read on a mental process at all. The strategy was to stress the differences between thought and program processes; specifically, by pointing out that information is physically represented in computers and that machine processes do not, in fact, duplicate human thought processes. Patent proponents, attempting to widen the conceptual gap between mental and program processes, also stressed the similarities between software and hardware implementations. The following dicta from Ex parte Egan''129 U.S.P.Q. (BNA) 23 (Pat. Off. Bd. App. 1960). The opinion upheld the patentability of a method for measuring the depth of well bores that required making entries on a series of specially constructed charts. was frequently cited on that point: Reliance on this passage had its own problems, however. Not only were "programs" not mentioned, but Egan distinguished the use of the charts from the method of their construction (which may well have been unpatentable as "mathematical computations"). Thus, the quoted dicta did not address the patentability of a “program" conceived as a method of configuring a "preconstructed computer." In any case, the primary employment of analogies between hardware and software were in defense of apparatus, not method, claims. The particular uses of the "mental steps" doctrine discussed in this article do not begin to exhaust its flexibility as a springboard for assertions that program processes were nonstatutory. The doctrine evolved from a relatively narrow, albeit challenged, preoccupation with human participation in claimed processes, to at least moral support for assertions that claims to totally automatic process steps threaten our “intellectual patrimony” and sought monopolies on “scientific truths.” References Category:Patent Category:Definition